It is quite extraordinary, how word mark ‘Ganesh’ was registered without any restriction or limitation. When a mark is registered, Registering Authority may do so without any condition or limitation. Absence of a disclaimer does not always vest an exclusive right over a word mark. In our case, registration of word mark ‘Ganesh’ was without any disclaimer. Registration appears to be invalid. Ganesh Grains Limited cannot restrain Shree Ganesh Besan Mill from using word mark ‘Ganesh’ in an ‘infringement action’.
Ganesh, a Hindu deity, Son of Ma Durga and Lord Shiva, is most powerful and widely worshiped. Hence, word or mark ‘Ganesh’ can never be distinctive of any person or trade. It is too common to be so. Any name of God is generally not distinctive and very common and is usually not registered as a trademark. Section 9(1)(a) of The Trade Marks Act, 1999 specifically states as an absolute ground for refusal of registration, trademarks which are devoid of any distinctive character.
Shree Ganesh Besan Mill submits, derivation of ‘Shree Ganesh’ was from Ganesh Lal Daryani. Even if Ganesh Grains Limited had registered trademark ‘Ganesh’, it cannot prevent Shree Ganesh Besan Mill under Section 35 of The Trade Marks Act, 1999.
A very interesting and important concept is: ‘trade dress’. Overall effect of ‘trade dress’ of Shree Ganesh Besan Mill is quite similar to Ganesh Grains Limited and bound to cause confusion in trade. Even if case for ‘infringement of trademark’ fails on plea of ‘invalidity’ or ‘lack of distinctiveness’ and ‘common use’, a case in ‘passing off’ would lie. Ganesh Grains Limited, prima facie, has been able to make out ‘passing off’.
– Hon’ble Justice I.P. Mukerji of Hon’ble High Court of Calcutta, Shree Ganesh Besan Mill v. Ganesh Grains Limited, 2022 (89) PTC 233 (CAL).
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